The Complainant is Goyard St-Honoré of Paris, France, represented by Cabinet Granger, France.
The Respondent is Stefano Rugoletti of Bern, Switzerland. 2. The Domain Names and Registrar
The disputed domain names , and are registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2012. On June 8, 2012, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain names. On June 15, 2012, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2012.
The Center appointed Anna Carabelli as the sole panelist in this matter on July 26, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a well-known French luxury goods house established in 1853 by Francois Goyard. The Complainant manufactures and sells luggage and leather goods, mainly wallets, hand bags, purses, etc. under the trademark GOYARD. The GOYARD mark is protected as a registered trademark in France, in Switzerland (Complaint annex 47) and in many other countries; annexed to the Complaint are copies of several national and international and community trade mark registrations for GOYARD filed by the Complainant (Complaint annexes 3-29).
The Complainant also owns various domain names (Complaint annexes 30-36) incorporating the GOYARD trademark and pointing to the Complainant’s official website.
The disputed domain names were registered on March 14, 2012. According to the statements and evidence submitted Complaint (annexes 44,45 and 46) by the Complainant, the disputed domain names are being used to display websites offering for sale GOYARD branded products at prices (in US dollars) that are considerably lower than those of original GOYARD products and are counterfeited GOYARD goods.
The Panel notes that the domain name presently directs users to a webpage having no content and showing the message. “This account has been suspended”, whereas the domain names and open to a web site offering porno videos and erotic contents. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are confusingly similar with its registered trademark GOYARD since they incorporate the Complainant’s well-known mark in its entirety. The Complainant argues that (i) the addition of the generic terms “online”, “shop” and “outlet” does not eliminate the similarity but on the contrary strengthens the confusion between the domain names and the Complainant’s trademark GOYARD because of the direct relation with the Complainant’s products and the Complainant’s business; and (ii) the domain name suffix “.com” does not give any distinctive character to the domain name. In this connection the Complainant refers to previous WIPO UDRPdecisions stating the principles that the descriptive words do not detract from the confusing similarity between a trademark and a domain name.
In addition, the Complainant asserts that the Respondent has no rights or legitimate interests in the domain names. The Complainant has no relationship with the Respondent and has not authorized it to use the GOYARD mark. The Respondent is not using the disputed domain names in connection with a bona fide offering of goods neither is it making a legitimate noncommercial or fair use of the disputed domain names.
The Complainant states that the domain names were registered and are being used in bad faith. The Respondent cannot have ignored the existence of the Complainant when the domain names were registered given the strong reputation and the distinctive character of the Complainant’s marks GOYARD worldwide and considering that the disputed domain names direct Internet users to web sites related to the Complainant’s business and offer for sale counterfeited GOYARD products. The Respondent is using the disputed domain names with the intent to mislead consumers for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web sites. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph. 15(a) of the Rules instructs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The domain names in issue are identical or confusingly similar to the Complainant’s trademark or service mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) the domain names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain names for the purpose of paragraph 4(a)(ii) above. A. Identical or Confusingly Similar
The Complainant has proved that it owns numerous trademark registrations for the mark GOYARD in several countries.
The disputed domain names are confusingly similar to the Complainant’s trademarks, as they entirely incorporate GOYARD and the suffix “.com” has no legal significance when comparing domain names. On the other hand the addition of generic terms or numbers does not create a different designation in which the respondent has right, and cannot be considered sufficient to avoid confusion between the domain names and the complainant's trademark (Goyard St-Honoré v. Domain ID Shield Service / Arif Cahyono, WIPO Case No. D2012-1158; Sanof- Aventis v. C,WIPO Case No. D2005-0660; GA Modefine SA v. Riccardo Bin Kara-Mat,WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219; Toshiba Corporation v. Distribution Purchasing & Logistics Corp.,WIPO Case No. D2000-0464).
On this issue the Panel further notices that the terms “shop” “outlet” and “online” are plainly descriptive and generic particularly if used, like in the case in hand, for a web site that functions as an online store or shop (Deutsche Telekom AG v. Timmy Comeau,WIPO Case No. D2003-0377; Casio Computer Co v. Jongchan kim,WIPO Case No. D2003-0400); on the other hand, the above words can likely be associated with the Complainant's business, therefore the combination with “GOYARD” clearly is confusing (Hermes International v. BAG12, Nick Kim, WIPO Case No. D2010-2290; Christian Dior Couture v. Carl LimWIPO Case No. D2008-1038; Hermes International SCA v. Cui Zhenhua,WIPO Case No. D2010-1743; Yahoo! Inc. v. Jorge O. Kirovsky, WIPO Case No. D2000-0428).
Accordingly the Panel finds that the Complainant has established element 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the trademark GOYARD.
The Complainant asserts that the Respondent is not commonly known by the disputed domain names and cannot demonstrate any legitimate noncommercial or fair use of the disputed domain names, particularly because the Respondent is using the disputed domain names to offer for sale counterfeited GOYARD goods.
The Complainant has established prima facie evidence that none of the three circumstances establishing legitimate interests or rights mentioned above applies. As stressed by many WIPO UDRP decisions, in such a case the burden of proof shifts to the Respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683).
Because the Respondent failed to submit an answer to the Complaint, and given that the allegations of the Complainant prima facie do not raise substantial doubts, the Panelist accepts as true all allegations set forth in the Complaint and holds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
Accordingly the Panel finds that the Complainant has established element 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant has provided substantial evidence that its GOYARD mark is widely known in connection with luxury handbags and luggage (Complaint annexes 39, 40). The reputation of the GOYARD mark has also been established in the Goyard St-Honoré v. Whois Guard Protected, Brucef Lee,WIPO Case No. D2011-1837.
Given the international reputation of the GOYARD mark and of the GOYARD branded products and the fact that the disputed domain names direct Internet users websites related to the Complainant’s business, the Panel finds that the Respondent was fully aware of the Complainant’s trade mark at the time it registered the disputed domain names. Such fact shows that the disputed domain names were registered in bad faith (see Revlon Consumer Product Corp v. Domain Manager, WIPO Case No. D2003-0602; Microsoft Corporation v. Superkay Worldwide Inc., WIPO Case No. D2004-0071; Revlon Consumer Product Corp. v. Easy Weight Loss Info WIPO Case No. D2010-0936; Hermes International SCA v. Cui Zhenhua,WIPO Case No. D2010-1743).
The evidence shows that the websites at the disputed domain names were used by the Respondent to offer for sale GOYARD branded products at prices that are lower than the original GOYARD products. The Complainant asserted that the products offered on the Respondent’s websites are counterfeited GOYARD branded products and this assertion has not been rebutted by the Respondent. The sale of counterfeited goods under the Complainant’s trademark amounts to bad faith (See Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019; Hermes International SCA v. Cui Zhenhua,WIPO Case No. D2010-1743.
The Panel finds that by using the disputed domain names, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites.
In addition the Panel notes that the fact that the Respondent’s web site “www.” could not be visited when the decision was drafted, does not affect the above conclusions. It is an established principle that the lack of active use of a domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith and in the Panel’s view the circumstances of the present case (namely: strong reputation and distinctiveness of the Complainant’s trademarks and goods, no response to the Complaint, the impossibility of conceiving a good faith use of the domain name) clearly show the Respondent’s bad faith. In addition the fact that the Respondent’s websites “www.” and “www.” presently offer porno contents further confirms the Respondent’s bad faith. Several decisions under the Policy have held that use of another’s mark in a domain name for a pornographic website reflects bad faith. (See, e.g., Arizona Board of Regents for and on behalf of Arizona State University v. Value Holdings, Inc.,WIPO Case No. D2001-0445; Nokia Corp. v. N aka IBCC,WIPO Case No. D2000-0102; National Football League Properties Inc. v. One Sex Entertainment Co.,WIPO Case No. D2000-0118; Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov, WIPO Case No. D2004-0311).
Accordingly the Panel finds that the Complainant has established element 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names , and be transferred to the Complainant
Anna Carabelli
Sole Panelist
Date: July 27, 2012
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